The UK Government has published guidance (Guidance) on applying for registered designs following the UK Supreme Court's ruling that the Kiddee Case (PMS) did not infringe a registered Community design (RCD) owned by the company that makes the Trunki case. The UK Guidance comes on the back of EU guidance on preparing applications for RCD's – see here. We previously reported on this here.
Ealier this year, children's suitcase maker Magmatic which makes the iconic 'Trunki' ride on suitcases for children failed in its bid to sue competitor PMS International Group over its 'Kiddee Case', in a well-publicised ruling handed down by the UK Supreme Court, described at the time by some lawyers as a 'blow' for UK design rights.
We reported this highly significant case in our article, "Lid firmly closed in Trunki suitcase design case" which can be accessed here.
The Supreme Court agreed with the Court of Appeal which had overturned a 2014 ruling by the English High Court which sided with Magmatic.
In the Guidance, published on 1 June 2016, the UKIPO said that applicants seeking to protect their design should "seek legal advice" before submitting an application for a RCD.
The UKIPO added that, "the Supreme Court's judgment places much emphasis upon the distinction between those designs which are intended to protect shape alone, and those which are intended to protect both shape and other features. Although line drawings have been effectively used to signify shape-only, the law does not require that applicants state the 'type' of protection intended when submitting a UK registered design application."
The Guidance also advises applicants to "take care" when selecting representations for use in RCD applications and to consider how courts have responded to two different types of representations, including line and computer-aided designs and drawings (CAD).
"Applicants should not interpret the Supreme Court's judgment as discouragement against the general use of CAD representations when filing registered designs per se."
In general applicants are advised to use simple line drawings that reflect the Supreme Court's confirmation that overall impression can be determined by the representations used.
Following publication of the Guidance, it is important to note that applying for a RCD is not as straightforward as it may first appear and legal clarification or expert assistance may need to be taken.
RCD's have the potential to be a very powerful tool provided they are registered correctly. Failure to do so could lead to them being rendered much less restrictive than they could be.
RCD's are cheap to apply for (note that design registrations in the UK will become even cheaper following fee changes), thus every designer should consider them an essential part of protecting their portfolio and business.in: Designs, EU/International, News